Japan set to pass trademark law changes
The Japanese government is reportedly poised to pass new legislation that would enable trademark registration for sounds, moving images and colours.
A bill, which would legislate for “non-conventional trademarks”, could be passed by Autumn this year, according to Japanese newspaper Yomiuri.
However, according to Kensaku Takase, partner at Baker & McKenzie LLP in Tokyo, the government should focus its efforts on addressing conventional trademark law.
“I have never had complaints from overseas companies that Japan needs to allow the registration of sound, colour and moving image marks. Instead, the much bigger trademark issues at the forefront of overseas companies’ minds are the lack of a letter of consent system in Japan, and the difficult-to-follow Japanese sub-class system.”
It is thought the proposed changes stem from Japan’s desire to join the Trans-Pacific Partnership (TPP), a free trade agreement between countries in the pacific region being spearheaded by the US. Prospective members are encouraged to strengthen their IP laws before to joining.
The proposals in Japan also follow hot on the heels of a series of reforms to the country’s copyright law.
Takase added that, while other countries have passed similar proposals, there may be difficulties arising when obtaining permission for a non-conventional trademark.
“Even in countries where it is technically possible to register such marks, trademark laws are typically drafted in a way which does not allow companies to register non-distinctive marks.
“Where there has been substantial use, then a company may be able to argue the colour, or a combination of colours, has acquired distinctiveness through such use, but the burden of proof is typically very high.
“I would expect Japan to apply similar principles, and therefore it may be useful for certain brand owners, but typically only for companies with very well-established brands with a strong reputation in Japan.”
